In your view, what is the best strategy for demonstrating the value of a patent portfolio to the C-suite, and why is it so effective?

I spent over 10 years in-house, dealing directly with C-suite members almost on a daily basis. What I have learned through those interactions is that their main focus is on achieving corporate business goals. What they do not care about (at least directly) is claim scope and the minutia of claim interpretation. They tend to leave this to the attorneys and engineers or scientists to deal with. Therefore, the way to show C-suite members the value of a patent portfolio and risk management activities is to demonstrate how it will help them achieve their corporate goals – be it keeping competition at bay, building a defensive patent shield for cross licensing or cross litigation or avoiding business disruption through a well-structured and holistic risk management programme. 

As a partner in BCF’s IP group, what makes a world-class patent team, and how do you go about building one?

The first and most important concept is the calibre of our people, from assistants to paralegals and associates. Selecting team members with the necessary technical and legal skills and relevant experience goes without saying. However, what truly makes a world-class team is alignment on values and ’soft’ performance indicators – the ability to prioritise clients’ needs, deal with stressful and urgent situations and simply have fun and enjoy every minute of providing patent services. 

When it comes to technical skills and experience, we prioritise team members who have cross-jurisdictional experience to go hand in hand with our ’one-stop shop’ business strategy, which requires qualified attorneys and agents in multiple jurisdictions (eg, Canada, the EPO and the United States). This offers our team members tremendous opportunities to gain insights into how patent law is structured in other jurisdictions and work with colleagues to render the most optimised and rounded multi-jurisdictional patent advice. 

Given your expertise in the technology space, what do you anticipate the biggest challenges for clients in this rapidly evolving landscape will be over the next 12 months, and how are you preparing to help them mitigate this? 

Over the years we have seen several disruptive technologies – after all, as patent professionals, we see cutting-edge technologies emerge all the time. However, the recent pace of technological advancement is truly mind boggling. AI and its penetration of all areas of human endeavour is truly impressive. It will impact us in at least two ways: the convergence of AI and other technologies, and the way we practice and deliver services in a more time and cost-effective manner. 

If you could change one thing about the patent prosecution process in Canada, what would it be, and do you think it is likely to happen? 

Every patent system must evolve and fine-tune its legal framework. Looking holistically at the Canadian patent system today, there are several areas for potential tweaking and improvements, such as the: 

•  current lack of continuation applications practice; 
•  very restrictive divisional practice;
• lack of terminal disclaimer practice to overcome double-patenting rejections;
• effect of legal services consolidation that is underway in the Canadian patent agency practice; and 
• aligning of patent office practice and Supreme Court of Canada precedents. 

If I had to pick one, I would focus on the last point. 

If we assume that the patent office is not set up to make laws – and that this is parliament’s role, with the Supreme Court being the highest authority on interpreting the law – then it is critical that the patent office follows the law as interpreted by the Supreme Court for us to have a predictable patent system. This is the area where I believe the most urgent change is required. 

I feel positive that one day we will get there, but it will take work and will on behalf of patent office policy makers. 

Prior to joining BCF, you gained significant experience as in-house counsel for a number of corporations. How have these experiences shaped your current approach to IP strategy? 

Working in-house and seeing the business from the inside has taught me several invaluable lessons that I rely on every day in private practice. The most valuable is pragmatising legal and patent advice. Business leaders must make educated decisions, relying on quality patent advice. Tailoring this to their business needs and making it practical and reliable is critical in enabling the business to achieve its goals and to enable the in-house team to establish effective and long-lasting relationships with internal clients.